DECISION
Bridgestone Corporation and Bridgestone Brands, LLC v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf
Claim Number: FA2402002082871
PARTIES
Complainant is Bridgestone Corporation and Bridgestone Brands, LLC ("Complainant"), represented by Douglas A. Rettew of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, District of Columbia, USA. Respondent is Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf ("Respondent"), Iceland.
REGISTRAR AND DISPUTED DISPUTED DOMAIN NAMES
The disputed domain names at issue are <bridgestonetires.us.com> and <firestonetires.us.com>, registered with NameCheap, Inc.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl v. Fink (Ret.) as Panelist
PROCEDURAL HISTORY
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated.
Complainant submitted a Complaint to Forum electronically on February 7, 2024; Forum received payment on February 7, 2024.
On February 8, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <bridgestonetires.us.com> and <firestonetires.us.com> disputed domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the "CDRP Policy").
On February 12, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 2024 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@bridgestonetires.us.com, postmaster@firestonetires.us.com. Also on February 12, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the CDRP Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the disputed domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
UDRP Rule 3(a) and Forum's Supplemental Rule 1(e) govern situations involving multiple complainants. UDRP Rule 3(a) states, "Any person or entity may initiate an administrative proceeding by submitting a complaint." Forum's Supplemental Rule 1(e) defines "The Party Initiating a Complaint Concerning a Domain Name Registration" as a "single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all disputed domain names listed in the Complaint."
The Complainants in this matter are Bridgestone Corporation and Bridgestone Brands, LLC. Complainants request that the multiple complainants be treated as a single entity. Respondent did not file a response and has not objected to this request.
Panels have interpreted the Forum's Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. See BFD, Inc. and Barefoot Dreams, Inc. v. kanggeng sheng, FA 1997581 (Forum July 6, 2022) ("There are two Complainants in this matter: BFD, Inc. and Barefoot Dreams, Inc. BFD, Inc. is the owner of the primary mark BFD that is the subject of this complaint, and has exclusively licensed Barefoot Dreams, Inc. to make and sell products under the BFD mark, which it does…. The Panel finds that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and thus it will treat them as a single entity in this proceeding."); see also ITT Inc. and ITT Manufacturing Enterprises, LLC v. Thomas Romero, FA 1961339 (Forum Sept. 29, 2021) ("It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.").
The Panel finds that the evidence establishes sufficient nexus or link between the Complainants, and it will treat Complainants as a single entity for this proceeding. They are referred to collectively as Complainant.
PARTIES' CONTENTIONS
A. Complainant
Complainant is the owner of the FIRESTONE and BRIDGESTONE marks. FIRESTONE and BRIDGESTONE are internationally recognized brands.
Respondent's <bridgestonetires.us.com> and <firestonetires.us.com> disputed domain names are confusingly similar to Complainant's FIRESTONE and BRIDGESTONE marks. The <bridgestonetires.us.com> and <firestonetires.us.com> disputed domain names incorporate the FIRESTONE and BRIDGESTONE marks in their entirety.
Respondent lacks rights or legitimate interests in the <bridgestonetires.us.com> and <firestonetires.us.com> disputed domain names, both registered December 23, 2022. Respondent is not commonly known by the disputed domain names, nor has Respondent been authorized by Complainant to use the FIRESTONE and BRIDGESTONE marks. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services.
Respondent registered and uses the <<bridgestonetires.us.com> and <firestonetires.us.com> disputed domain names in bad faith. Respondent registered and is using the disputed domain names to phish for internet users personal and financial information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <bridgestonetires.us.com> and <firestonetires.us.com> disputed domain names.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").
Identical and/or Confusingly Similar
Complainant's registration of the FIRESTONE mark (e.g. Reg No. 0140804 registered March 29, 1921) and BRIDGESTONE mark e.g. Reg No. 2886688, registered September 21, 2004) with the USTPO establishes Complainant's rights in the marks, as "registration of a mark with a legitimate governmental authority is sufficient under the Policy to allow a rebuttable presumption of rights in the mark." See Target Brands, Inc. v JK Internet Services, FA 349108 (Forum Dec. 14, 2004). The Panel finds that Complainant has rights in the marks under Policy ¶ 4(a)(i).
Complainant argues that the disputed disputed domain names are identical or confusingly similar to Complainant's BRIDGESTONE and FIRESTONE marks because they are identical to those marks, adding only the generic term "tires" and the non-distinguishing TLD ".us.com." Such changes are insufficient to distinguish the Disputed domain names from Complainants' BRIDGESTONE and FIRESTONE marks. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms does not prevent a finding of confusing similarity under the first element. See Rakuten, Inc. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Matthew Connor, No Company, WIPO Case No. D2019-2983. Furthermore, the addition of a top-level domain is irrelevant for purposes of paragraph 4(a)(i) of the Policy. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs."). Therefore, the disputed domain names are identical or confusingly similar to Complainant's trademarks.
Complainant has proved this element.
Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests."). The Panel finds that Complainant has made a prima facie case as to each domain name.
Complainant argues that Respondent is not and has not been commonly known by the disputed domain names. Nothing in Respondent's WHOIS information or the record demonstrates that Respondent is commonly known by the disputed domain names, and Complainant has not authorized Respondent to use the BRIDGESTONE or FIRESTONE marks. See Giant Eagle, Inc. v. Giant Eagle/Giant Eagle Inc., Case No. FA 1586562 (Forum Dec. 6, 2014) ("The WHOIS information lists 'Giant Eagle' of 'Giant Eagle Inc' as the registrant. Nevertheless, there is no evidence of any outside association between Respondent and the 'Giant Eagle Inc' name beyond Respondent's own self-serving association. Accordingly, the Panel holds that Respondent is not commonly known by the <gianteagleinc.com> name pursuant to Policy ¶ 4(c)(ii)."). The Panel finds Respondent is not commonly known by either domain name.
Complainant also argues that Respondent's registration and use of the disputed domain names to phish for users' personal and financial information or to otherwise perpetuate fraud does not constitute a bona fide offering of goods or services pursuant to Section 4(c)(i) of the Policy. See, Lockheed Martin Corp. v. mail mail, Case No. FA 1739473 (Forum Aug. 9, 2017) ("Using a confusingly similar domain name to fraudulently obtain information or money fails to constitute a bona fide offering of goods or services or legitimate noncommercial or fair use."). Complainant has submitted evidence to support these allegations. The Panel finds Respondent has no rights or legitimate interests in respect of either domain name.
Complainant has proved this element.
Registration or Use in Bad Faith
Complainant argues that Respondent's registration and use of the disputed domain names constitutes bad faith under Section 4(a)(iii) of the Policy because Respondent registered and uses the resolving websites to fraudulently acquire users' personal and financial information or to otherwise perpetuate fraud. See Teva Pharm. Indus. Ltd. v. Withheld for Priv. Purposes / Priv. serv. provided by Withheld for Privacy ehf, Case No. FA 1973413 (Forum Dec. 16, 2021) ("Use of a domain name incorporating a registered mark to impersonate the mark owner for fraudulent purposes is sufficient to show bad faith for purposes of the Policy."). Complainant has submitted evidence to support these allegations.
Complainant also argues that Respondent's current inactive use of the disputed domain names is in bad faith, given the fame of the BRIDGESTONE and FIRESTONE marks. See Lockheed Martin Corp. v. Meghan Russo/Lockheed Martin, Case No. FA 1891540 (Forum May 12, 2020) ("The domain name does not resolve to an active website and it is difficult to imagine any good faith use to which the domain name could be put, since it comprises a typosquatted version Complainant's highly-distinctive and famous LOCKHEED MARTIN mark.").
Complainant also argues that Respondent had actual knowledge of Complaint's rights in the BRIDGESTONE and FIRESTONE marks before registering the disputed domain names. Complaint argues that Respondent registered and uses the disputed domain names with the BRIDGESTONE and FIRESTONE marks, for websites that feature those marks plus Complainant's highly recognizable logos. See Bridgestone Corp. v. Saif Ashfaq, Case No. FA 1735354 (Forum July 6, 2017) ("[T]he Panel finds that Respondent registered the domain name with actual knowledge of Complainant's BRIDGESTONE trademark. Respondent's knowledge of Complainant's mark is apparent from the notoriety of Complainant's trademark, from Respondent's display of Complainant's trademark and confusingly similar logo on Respondent's website and from Respondent's purposing of the website to compete with Complainant. Respondent's actual knowledge of Complainant's rights in the BRIDGESTONE mark prior to its registering the domain name further indicates that Respondent registered and used the at-issue domain name in bad faith under Policy ¶ 4(a)(iii)."). The Panel finds from the fame of Complainant's marks and the use made of the domain names that Respondent had actual knowledge of Complainant's rights in the marks and registered and uses the domain names in bad faith.
Complainant has proved this element.
DECISION
Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <bridgestonetires.us.com> and <firestonetires.us.com> disputed domain names be TRANSFERRED from Respondent to Complainant.
______________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
March 18, 2024
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